A.K. Sikri, J.

1. By this order I propose to dispose of both the applications i.e. IA. 6940/2001 and IA. 7311/2001. IA. 6940/2001 is filed by the plaintiff for ad-interim injunction whereas IA. 7311/2001 is filed by defendant seeking vacation of injunction order dated 6-8-2001. Both the applications were therefore heard together.

2. The suit filed by the plaintiff is for permanent injunction in respect of passing off, infringement of trademark and copyright and for damages and delivery up. Subject matter of the suit are two magazines, one published by the plaintiff and other published by the defendant - both titled "Wedding Affair". The case of the plaintiff is that his magazine is published from London and circulated in most parts of the world including India and that the defendant has started its publication with the same name infringing his trade mark and copyright.

3. When the matter came up for preliminary hearing on 3-8-2001, notice in the application was issued for 6-8-2001. Notice was duly served on the defendant. However, the defendant did not appear on 6-8-2001. Having regard to the averments made in the plaint as well as in IA. 6940/2001 and in the absence of any opposition, order dated 6-8-2001 was passed restraining the defendant, its dealers, representatives etc. from directly or indirectly using or adopting the name Wedding Affair on any of its publication amounting to passing off of the publication in the name of the plaintiff. The defendant was also restrained from adopting the artistic work of the plaintiff in any manner that may constitute unfair competition/unfair trade practice and infringement of copyright of the plaintiff.

4. Immediately, thereafter defendant filed IA. 7311/2001 under Order XXXIX Rule 4 CPC. It was listed on 14-8-2001. Notice of this application was directed to be issued to the plaintiff through counsel, returnable on 5th September, 2001. On 5-9-2001 it was recorded that although the plaintiff is served, there is no appearance on behalf of the plaintiff. However, the matter was deferred to 7-9-2001. As nobody appeared on behalf of the plaintiff on 7-9-2001, the order dated 6-8-2001 was suspended. After this order was passed, counsel for the plaintiff appeared in the afternoon session and submitted that there was no service upon him because of which he could not appear in this case. At his request, matter was listed on 10-9-2001. There was much controversy regarding service of defendants application on plaintiffs counsel. However, instead of addressing this controversy, it was thought fit to hear both the applications on merits and decide the same. In these circumstances, arguments were heard on these applications thereafter on different dates.

5. The case of the plaintiff is that his magazine Wedding Affair is a unique publication which offers its readers a wealth of information regarding Western and Asian Bridal habits and innovations and developments within the wedding industries. First issue of this publication was brought out in February, 1994 and since then the plaintiff has published, sold and distributed regularly its subsequent issues. The magazine is still being published and continues to be published till date. In last seven years its turnover is approximately 15 lacs Sterling pounds which speaks volumes about the popularity and acceptability of the said publication. The plaintiff has mage huge investment on advertisements and promotion of this publication which is widely distributed in U.K. as well as other countries including India. The plaintiff claims that he is the owner of trade mark in respect of the magazine named Wedding Affair by virtue of its long, continuous, extensive and exclusive user. He also owns copyrights in respect of contents printed in his publication and, therefore, he has exclusive right to use the name Wedding Affair. The name Wedding Affair was innovatively selected by him. The magazine is also registered vide Registration No. ISSN-1353-0860. It has acquired Trans-border reputation and has become extremely well-known and is having a distinctive status in the market. He came to India on 28-7-2001 when his attention was drawn to similar magazine published with identical trade mark Wedding Affair by the defendant. Adoption of identical name by the defendant with other similarities tantamounts to passing of defendants publication as that of the plaintiff which is dishonest and fraudulent act on the part of the defendant who wants to encash upon the reputation enjoyed by the plaintiff. Learned counsel for the plaintiff submitted that the injunction order dated 6-8-2001 needs to be confirmed and paraphrased legal submissions in the following manner:

There was no dispute that the plaintiff was prior user of the trade mark Wedding Affair i.e. since 1994 and as per the defendants own showing the defendant started its publication only in the year 1999. ownership of the plaintiff in the magazine was also not disputed. This shows that he had exclusive right to publish the magazine in the name of Wedding Affair. It was submitted that the plaintiff was even selling magazine in India which was clear from the documents showing that the plaintiff had booked the advertisement in the magazine Movie First City appearing in the year 1995. It was further attempted to demonstrate that Mr. Tarun Sharda was the representative of plaintiffs magazine in India who was shown as the Editor of the defendants magazine as was clear from the documents filed by the defendant itself. This amply proved that the defendant had the knowledge about the plaintiffs magazine and the adaptation of the same name by the defendant was dishonest and mala fide and thus the action of passing off by the plaintiff against defendant was legally valid.

6. It may be stated at this stage that in defense, the defendant does not dispute the publication of plaintiffs magazine since 1994 with identical trade name/title i.e. Wedding Affair. It is also not disputed that the defendant who started magazine later in point of time adopted the same name and that Mr. Tarun Sharda was the plaintiffs representative earlier who was the Editor of the first issue of the defendants magazine. However, learned counsel for the defendant sought to justify the adaptation of the same trade name on the following grounds:

1. There was no trade mark or copyright registered in favor of the plaintiff and the present case was that of passing off. The plaintiffs magazine was being published in London and to succeed in an action for passing off, it was obligatory on the part of the plaintiff to show that the plaintiffs magazine enjoyed trans-border reputation and mere prior user was not sufficient. The plaintiff had miserably failed to satisfy this essential ingredient. No documents in support of this claim were filed. The plaintiff had not produced any invoices on record showing sale of this magazine in India. It was also submitted that the plaintiff had not even produced any document on record to show any extensive sales even in U.K. or other countries. Insofar as advertisement of plaintiffs magazine in Indian magazine Movie is concerned, only invoice dated 31-7-1995 was produced without any document showing actual advertisement appearing in August, 1995 since in Movie. As far as advertisement in magazine First City is concerned, all these advertisements appeared in single issue i.e. August, 1995 issue alone. Thus even if it is taken that the advertisement of the plaintiffs publication did appear in the two magazines the same related to only one issue each i.e. August, 1995 which also happened more than six years ago which was not sufficient to establish spill-over reputation,

2. April-June, 2001 issue of the plaintiffs publication showed Sangin Zaveri and Sakalain Meghjee (i.e. the plaintiff) as publishers and copyright with Asian Media Publisher Ltd. and, therefore, the plaintiff could not claim exclusive right over the publication projected by the plaintiff. Learned counsel also referred to the correspondence exchanged with Mr. Rajnish Rathi, particularly Fax dated 12-9-2001 as per which it was not sure as to whether this publication was ever published and even the address of publisher Asian Media Publishing Ltd. was not known. The defendant also placed on record Certificate dated 14-9-2001 issued by Registrar of Companies for England and Wales as per which company Asian Media Publishers Ltd. was incorporated on 29-10-1992 and went into liquidation on 4-4-1995. On the magazine of the plaintiff the price in Indian Rupee was not mentioned which clearly showed that the publication was not circulated in India for sale or otherwise. The plaintiff had made false averments in paras 5, 8 and 11 of the plaint regarding continuity of the magazine. As per the record filed by the plaintiff himself the magazine was earlier published in 1994-95 and thereafter discontinued. The company having copyright and advertising sales etc. stood dissolved wayback in 1995-96. In some of the other publications of the plaintiff AMP Media Sales Ltd. was shown as Advertising Sales Agency which company was incorporated on 24-3-1994 and dissolved by notice in London Gazette dated 9-1-1996. In support again Certificate dated 14-9-2001 of Registrar of Companies London and Wales has been filed. The plaint was, therefore, based on wrong allegations and the suppression of facts regarding the dissolution of the aforesaid companies and in fact the plaintiff had adopted the name Wedding Affair in respect of the magazine earlier which was later on abandoned and, therefore, it was the right of the defendant to adopt this name. There was no trace of plaintiffs magazine in the Legal Deposit System prevailing in U.K. The name of the plaintiffs magazine did not find mention in "WILLINGS PRESS GUIDE" which contains the particulars of all the newspapers and periodicals published in U.K.

In nutshell it was argued that there was neither any spill over reputation nor continuity of the publication of the plaintiffs magazine. In any case the doctrine of abandonment would apply.

3. At the end, it was submitted that the balance of convenience would be in favor of the defendant and against the grant of injunction inasmuch as the defendants publication which started almost three years ago should not be made to stop this publication at this stage. Further, if ultimately the defendant succeeds and the plaintiff loses; the defendant would not be in a possession to recover the damages from the plaintiff inasmuch as the plaintiff was national and citizen of U.K. with no assets in India and provisions of Order XXV CPC were clearly attracted.

4. Before we part with the submissions of the defendant, it would be appropriate to mention the version of the defendant describing the background under which trade mark Wedding Affair was adopted by the defendant in respect of its magazine. In paras 7 to 9 of the defendants application under Order XXXIX Rule 4 CPC, reference to which was made at the time of arguments, it is stated by the defendant that defendant adopted this name honestly and bonafidely. The gist of the submission in aforesaid paras is that there was a magazine with the title Wedding Affair registered even in India under the Press and Registration of Books Act, 1957 and the defendant obtained the assignment/transfer of this title in its favor. It further explains that there was no other entity in India using the trade mark Wedding Affair in relation to magazine. As per the enquiries made by the defendant it found that there existed a magazine under the title Wedding Affair in U.K. belonging to the plaintiff which had closed-down in the year 1996 and further that this magazine had never been available for sale in India. Thus defendant honestly and bonafidely adopted the trade mark "Wedding Affair to its publication. It is also stated that Mr. Sangin Zaveri, the erstwhile co-publisher of the plaintiff company had confirmed that the magazine of the plaintiff was discontinued some time in 1996 pursuant to order of winding up issued by the High Court in England.

7. The learned counsel for the plaintiff rejoined and rebutted the aforesaid submissions of the defendants counsel. His main thrust was that as the defendant had not filed the written statement till date, applications should be decided believing the contents of the plaint at this stage. The winding up of the two companies was of no consequence as the plaintiff was publishing the magazine which fact was admitted by the defendant.

8. As already mentioned above the present case is a case of passing off and not that of infringement of registered trade mark. The necessary ingredients or characteristics to establish such a claim were spelt out by House of Lords, England in the classic judgment in the case of Erven Warnink Besloten Vennootschap and Anr. v. Townend & Sons (Hull) Ltd. and Anr., 1979 AC 731. Referring to the earlier case law on the subject, House of Lords identified the following five characteristics which must be present in order to create a valid cause of action for passing off:

"(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."

9. It would also be apposite to quote the following observations of Lord Diplock, J. in the aforesaid judgment appearing immediately after identifying the aforesaid five characteristics:

"In seeking to formulate general proposition of English law, however, one must be particularly careful to beware of the logical fallacy of the undistributed middle. It does not follow that because of passing off actions can be shown to present these characteristics, all factual situations which present these characteristics give rise to a cause of action for passing off. True it is that there presence indicates what a moral code would censure as dishonest trading, based as it is upon deception of customers and consumers of a traders wares but in an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons why it should have been the policy of the common law not to run the risk of hampering competition by providing civil remedies to every one competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the action for passing off originated was no place for the mealy mouthed; advertisements are not on affidavit; exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of his rivals even though he knows this to be untrue, have been permitted by the common law as venial "puffing" which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result."

10. Lord Diplock, J. in the same opinion although observing that when the aforesaid five characteristics are present in a case the same would generally be enough to grant injunction, still maintained that in those cases where some exceptional feature which justifies on the grant of public policy, the injunction could still be refused.

11. Lord Fraser in a separate but conquering judgment stated, in his own words, as to what is required to be proved by the plaintiff in a passing off action in order to succeed in the case. He said:

"It is essential for the plaintiff in a passing off action to show at least the following facts:-(1) that his business consists of, or includes, selling in England a class of goods to which the particular trade name applies; (2) that the class of goods is clearly defined, and that in the minds of the public, or a section of the public in England, the trade name distinguishes that class from other similar goods; (3) that because of the reputation of the goods, there is goodwill attached to the name; (4) that he, the plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value, (5) that he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason to the defendants selling goods which are falsely described by the trade name to which the goodwill is attached."

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"Of course, any established trader is liable to have his goodwill damaged by fair competition, and it is not every falsehood told by a competitor that will give him a right of action. But where the falsehood is a misrepresentation that the competitiors goods are goods of definite class with a valuable reputation, and where the misrepresentation is likely to cause damage to established traders who own goodwill in relation to that class of goods, business morality seems to require that they should be entitled to project their goodwill. The name of the tort committed by the party making the misrepresentation is not important, but in my opinion the tort is the same in kind as that which has hitherto been known as passing off."

12. For the purpose of our case we may substitute the word India wherever word England appears in the above-quoted observations.

13. Indian Supreme Court wayback in the year 1969 in the case of Ruston & Hornby Ltd. v. The Zamindara Engineering Co.,

propounded the law on passing off, in the following words:

"The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intend to deceive. It is enough that the get-up of Bs goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable unless there had been fraud on As part. In equity, however, Lord Cottenham L.C. in Miilington V. Fox(1) held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiffs trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity gave the equitable rule the victory over the common law rule."

14. Keeping in view the aforesaid principles in mind relating to action of passing off, let us scan through the relevant facts of this case. At the outset, it has to be borne in mind that the magazine of the plaintiff is published from U.K. There is a serious disputes as to whether it is sold in India or not. While the plaintiff claims that he started marketing this magazine in India in 1995, the defendant has challenged this version of the plaintiff. Except a column showing from the page which gives information about publishers etc. that the plaintiff has Advertising Sales (India), no documents are produced on record to show any sales made in India. In view of there being a serious dispute in respect of a foreign magazine, it was necessary for the plaintiff to produce sufficient material to show that the magazine Wedding Affair is sold and is known in India. It was necessary for him to establish, prima facie, that the plaintiffs claim for reputation and goodwill in India, which is one of the necessary ingredients to be proved. However, not a single document of such sale has been filed. If what is stated in the magazine about the plaintiffs Advertising Sales (India) to be correct, then the plaintiff must be marketing the magazine in India through this Office/Agency. In that case it must be in possession of sufficient documentary evidence of sale through this Office. The credibility of the plaintiffs claim of having made sales in India is lost in the absence of such documents placed on record. Learned counsel for the plaintiff submitted that in para-6 of the plaint it has stated its sales figure which is not denied by the defendant as written statement has not been filed so far. A reading of the aforesaid para shows that the turnover of the plaintiffs magazine in last seven years is alleged to be 15 lacs sterling pounds but the plaintiff has not mentioned any sales figure in India. Although in para-7 of the plaint it is stated that plaintiffs magazine is widely distributed in various countries including India, this assertion without specific averments about the volume of sales in India and supported by documentary evidence cannot be of any avail to the plaintiff when the plaintiff is required, as per law, to establish his reputation and goodwill in India in a passing off action. After all in a passing off action but is to be seen is that the defendant is trying to pass off its magazine as that of the plaintiff by confusing the public at large by taking advantage of the goodwill of the plaintiffs magazine what if the people in this country do not have any knowledge about plaintiffs publication which they never saw or came across, the question of confusion cannot arise. Essential facts which are required to be proved in a passing off action as per the opinion of Lord Fraser are lacking in the instant case. Even for taking a prima facie view it was necessary for the plaintiff to make all necessary averments and suport the same by sufficient material. The plaint lacks the necessary averments of this nature and contains only bald averments. Even such bald averments, namely, magazine is being sold in India is not supported by any evidence. To be fair to the plaintiff, it may be mentioned that plaintiff has relied upon that two advertisement of his publication appearing in two magazines Movie and First City. However, a part from these two advertisement appearing in above-said two magazines of the same month, namely, August, 1995, no other documents are produced. May be in the year 1995 the plaintiff thought to stepping into India and, therefore, gave these advertisements. However, it appears that he stopped this exercise as that as neither any advertisement of the later period is shown nor any documentary evidence of sale in India is produced. These may give credence to the allegations of the defendant that the plaintiff has not printed its publication continuously and uninterruptedly particularly in view of dissolution of the company which was shown to be the copyright holder of the magazine. Be that as it may, this may not be much relevant factor for us as we are to see the reputation or goodwill of the plaintiff in India which the plaintiff has miserably fail to establish; albeit prima facie.

15. Even in the absence of such sales in India the plaintiff could still succeed, had it shown trans-border reputation of its publication. Here again, the plaintiff has failed as no evidence of spill over reputation has been produced. The case of The Proctor and Gamble Company v. Satish Patel, 1996 PTC 646 would come hiandy in favor of the defendant. Again this Court refused injunction in the case of Smithkline Beecham Plc. and Ors. v. Hindustan Lever Limited and Ors., 1999 PTC 775 where the plaintiff did not place on record any evidence of any use, reputation or goodwill in the S bend feature of the plaintiffs tooth brush FLEX even internationally prior to launch in India i.e. in June, 1996. The Court while observing that not a single advertisement was published in India or invoice prior to 1996 to show and indicate subsistence of any goodwill in this country held that:

"In the absence of any evidence of goodwill or any reputation, it cannot be presumed that the plaintiffs achieved a trans-border reputation prior to the filing of the suit in respect of their tooth brush, no injunction could be granted in favor of the plaintiff even in respect of OZETTE manufactured and marketed by the defendants vis-a-vis ACQUAFRESH FLEX. In the case of Whirlpool reported in 1996 PTC 415 there was voluminous evidence produced which were circulated in India for several years and the goods were sold to Embassies and in the context of such evidence this court held that the said product achieved trans-border reputation. No such evidence has been placed in the present case at least prior to 1996 and even whatever evidence has been placed on record after 1996 the same does not establish that the plaintiffs achieved a trans-border reputation. In order to prove trans-border goodwill and reputation the plaintiffs have relied upon materials published in the dental journal which admittedly has very restrict circulation. Mere publication of such advertisement and materials in dental journal cannot and would not establish a trans-border reputation. Such reputation, if any, was confined to a particular class of people i.e. the persons subscribing to the said specialised journals and cannot be said to be extended to the general consumers. It could not be shown that any advertisement was made by the plaintiffs prior to 1996 in any journal or magazine having wide circulation. In absence of same it is not possible to hold that the tooth brush of the plaintiff acquired any trans-border reputation and goodwill...."

16. To the same effect is the judgment of this Court in the case of The Gillette Company and Ors. v. A.K. Stationery and Ors. (Suit No. 2732 of 1999) decided on 3rd August, 2001.

17. On the consideration of balance of convenience also application of the plaintiff to interim relief has to fail. On has to bear in mind that the defendants magazine was started in January, 1999. It is about to complete 3 years of its publication. At this distant of time, in the facts of present case where the reputation of plaintiffs magazine at least in India is doubtful, it would not be appropriate to stop the defendants publication. Balance of convenience is clearly in favor of the defendant. The aforesaid factor and consideration is a relevant one, as recognised by the Honble Supreme Court in Wander Limited and Anr. v. Antox India Limited, 1990 (Supp) SCC 727. The Supreme Court observed:

"Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The Court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction. It is stated

".....is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favor at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The Court must weight one need against another and determine where the balance of convenience lies."

The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet commence his enterprise, are attracted."

18. Moreover, as rightly argued by learned counsel for the defendant, if the defendant is now restrained and at the end of the day the plaintiff fails in this suit, the defendant may not be able to recover any damages which it would have suffered because of stoppage of publication in the interregnum. On the other hand, the interest of the plaintiff can be taken care of by directing the defendant to maintain and file the accounts relating to the publication and sale of its magazine.

19. Considering the totality all the facts and circumstances of this case and also keeping in mind the principles governing to grant of temporary injunction, I am of the considered opinion that the plaintiff has not been able to make out a case for ad interim injunction. I.A. No. 6940/2001 filed by the plaintiff is accordingly dismissed. IA. No. 7311/2001 filed by the defendant is allowed and the interim order dated 6th August, 2001 is hereby vacated.

20. Needless to mention, the entire matter is examined on the touch stone of Order XXXIX Rules 1 and 2 dealing with the application for ad-interim injunction and therefore views expressed above are tentative and prima facie conclusions which shall not be treated as any final expression on the merits of the case.